Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Friday, 18 March 2011

There are so many Forthcoming Events on the IPKat's list that even he can't keep up with them. Do check them out!

In all due modesty, the IPKat was thrilled to be listed in The Times Online yesterday as a "Best Legal Blog" in the UK. Sadly, since this feature lives behind a paywall, he can't throw you a link to it, but what made him really happy is that a weblog that covers a niche subject like intellectual property can be spotted and given some recognition even when compared with blogs that cover far more general -- and popular -- topics. Merpel adds, a big thanks is owed as usual to the IPKat's readers, whose questions and comments have done so much to add spice to the Kats' offerings.

Are you an author in search of a subject to write about? If so, here's a fresh list of intellectual property-related subjects for which the Journal of Intellectual Property Law & Practice (JIPLP) is seeking articles. This list reflects at least in part the hopes of readers and subscribers, so you can be sure that if it's published in JIPLP, someone other than you, the editor and the proof reader is likely to read it. If none of the articles listed here appeals to you, JIPLP is always ready to negotiate ...

The world's response to scam sites? Right now, an
elite squad of hand-picked tortoises is being trained
to pursue the perpetrators ...

Demands for payments reach Galapagos. This is not a reference to the volcanic archipelago from which, from time to time, there is an eruption of giant tortoises, but rather to the fact that the IPKat is grateful to Maria Nichol (Galapagos NV) for drawing his attention to the firm and formal-looking demands of ECTO SA for payment in respect of a trade mark renewal (you can see for yourself here). Since the MARQUES Class 46 weblog posted on its most recent list of websites that give warnings about unwarranted demands for payments for services and directory entries, another three countries have emerged as providing information for IP owners and their advisors -- the Czech and Slovak Republics, followed by Ireland. The IPKat is upset that there is still too little warning information available. Merpel wants to know why, when almost every day there seems to be a new research project on the cost of patents or their impact on the economy, no-one seems yet to be commissioning or carrying out any research into the impact and effect of these parasites on the IP system. Well, what are we waiting for?

Who wants to see court documents anyway? Who cares? "Open justice and access to documents: can the Patents Court lead the way?" is the title of a thought-provoking piece hosted on PatLit here, which attacks the current archaic manner in which court documents must be sought in the internet age -- but which offers hope that some progressive thinking, and a lesson or two from the United States' experience of PACER, can improve the information environment.

If you're interested in the way that the press use (or abuse) the statutory exceptions and defences to copyright infringement when helping themselves to works generated by third parties, you've got something in common with talented young Polish lawyer Grzegorz Pacek, who is writing a PhD on this very topic under the auspices of the Jagiellonian University in Cracow. Though he is mainly focusing on Polish law, he'd like to hear from people in other jurisdictions who have interesting insights, war stories etc. More details here. You can email Grzegorz here.

An experienced and naturally non-cynical patent practitioner has emailed the IPKat with the following:

"We have an old case on which we filed a response to a European Patent Office examination report just under five years ago. We have just received a new report in which the normal four month term has been unusually shortened to three months. It's good to see that the EPO is keen to speed up the examination process, and is going about it so symmetrically".

Must be a non-cynical in-house attorney. A client-focussed private practice would have long before sent the EPO a letter querying when the next office action may be expected. Thereby prompting them to shift their backsides and send an OA without the applicant having instructed their agent to request acceleration. All in their clients interests of course and not part of a work-creation policy when business is quiet.

I am curious as to the nature of objections in the shorter term response letters. If they are simple ones then it does make sense for the EPO to set a shorter period. Wouldn't it be nice if they prepared to initiate scheduled telephone conferences as well in cases where constructive progress can be made.On the other hand, if the objections are very serious, it might make sense to get the thing abandoned before the next renewal fee is due. Either way, shorter response terms will be a problem if anonymous at 4:28 is right and patent attorneys need to create work for themselves. Go EPO

The second post is correct, simply requesting when the next action is to be expected will, in theory at least, speed things up, since the EPO will respond with an estimated date of when the action will be issued and in most cases will respect that deadline.

This does not require accelerated examination to be requested and so the applicant can still request extension of time limits under Rule 132 (which he can no longer do when acceleration is requested - OJ 1989, 180).

What are you grumbling about? Have industry's wishes changed? There was a time when we were quite satisfied with the possibility to postpone German and Japanese examination, German even against payment of annual renewal fees. Now we get almost the same in the EP system, and it works very well. The annual renewal fee paid while the case is pending is between one third and one tenth of what you would have to pay in annual fees (with the customary service fee) for issued patents based on a European application. All dependent on validations, of course! And if you really need your right soon, you can always accelerate the process. This is what I tell my clients.

Clearly no shortage of work for George so no need to prompt the EPO as discussed. The system is of clear benefit to the patentee with rights left pending for long periods as a concern to third parties, and the ability to speed things up as desired. The problem is the lack of clarity for third parties over the potential validity of such un-examined rights. The patent offices need to shift their backsides double quick to ensure the interests of all parties are looked after.

The EP system is far from working well. Quality is still good, though only just, but back-handed backlog clearing processes have dominated the workings of the EPO over the last few years, rather than good old fashioned elbow grease. How about examiners working lunchtimes, late nights and weekends like normal beings with a lot of work to get on top of? Take that as rhetorical as I wouldn't want to cause any stress for our EPO soldiers.

How about examiners working lunchtimes, late nights and weekends like normal beings with a lot of work to get on top of?

Considering the size of the backlog, that would make a lot of lunchtimes, late nights and weekends, quite frankly. Overtime may be a reasonable, possibly unexpected solution to a temporary spike in work, but hardly the right solution to a structural problem.

A qualified European Patent Attorney should be familiar with the Guidelines E-viii-1.2, and remind their examining division of their tenor.

He should also be familiar with section E-i-1.2, and count himself lucky to have received a further communication according to Art. 94(3) in place of summons to Oral Proceedings according to Art. 116 EPC. One is entitled to ask the question as to why wasn't the application in order for grant after the first communication.

Constant lunchtime, evening and weekend working is not a temporary solution and happens elsewhere. Structural changes to replace these working practices can take place concommitantly. "Overtime" also implies paid-for work, which isn't part of my plan. Another solution is to charge full national taxes on EPO staff and consider using the money raised in improving the system in other ways. Make life tougher for the examiners, remove the complacency that comes with guaranteed job security and subsidised canteens. Toughen them up and speed them up.

Anonymous@11:23 appears to suffer from a bad case of paysheet envy and/or Oral Proceedings Rage. As a former examiner who freely chose to leave the EPO's "guaranteed job security and subsidised canteens", I don't think however that any of the measures he proposes would result in an improvement in the backlog. Much the contrary: charging "full national taxes" on EPO staff would remove money from the system (EPO staff currently pay a notional internal income tax which would presumably disappear) only for the benefit of the Dutch and German tax authorities, make the EPO's already difficult job of attracting qualified staff even more difficult, and its staff turnover similar to that of the USPTO (definitely not the example to follow in terms of reducing the backlog of pending applications).

As for outsourcing the work to China or India, when the PTOs there have even more trouble coping with the flood of incoming applications, the idea is so ridiculous it doesn't even bear discussion.

Demagoguery may be satisfying to preach (at least anonymously), but it is a bit more difficult to practice.

Constant lunchtime, evening and weekend working is not a temporary solution and happens elsewhere.

It is not a solution at all, but a problem. Somebody who constantly works lunchtimes, evenings and weekends has both his work and his life priorities seriously out-of-kilter. It will lead to lousy work and an even lousier (but presumably short) life. And any organisation which requires this of its employees is seriously mismanaged and quite frankly doomed.

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